In T 708/00 (OJ 2004, 160) the board pointed out, with reference to preparatory document CA/12/94 cited in the Notice from the EPO in OJ 1995, 409, that the purpose of R. 86(4) EPC 1973 (R. 137(5) EPC) was to deal with the situation arising when amended claims relating to unsearched subject-matter were filed in response to the examiner's first communication. It did not apply when the applicant had not paid the search fee in respect of a non-unitary invention in spite of being invited to do so under R. 46(1) EPC 1973 (R. 64(1) EPC), cf. also G 2/92, OJ 1993, 591. These two rules were complementary in nature.
In case T 1285/11 (see in this chapter II.B.6.2.1), the examining division had refused the application on the basis of R. 137(5) EPC as well as former R. 164(2) EPC. Referring to the afore-mentioned Notice and the applicable version of the Guidelines, the board found that R. 137(5) EPC was not contravened because the subject-matter of the amended claims had already been present in the claims as originally filed. See also T 442/11, T 507/11, T 509/11, T 998/14 and T 145/13.
In T 2459/12 it was acknowledged that the board in T 1981/12 had doubted the appropriateness of R. 137(5) EPC as a basis for refusing an application based on the requests in that case. However it was the present board’s view that where, following the drawing up of a supplementary European search report by the EPO, an applicant filed amended claims seeking protection for subject-matter not covered by that report as a result of the application of former R. 164(1) EPC, an objection under R. 137(5) EPC should be raised. Non-compliance with R. 137(5) EPC was a ground for refusing an application.